Archive for: Art. 165 IPL

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.


The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Trade mark law, case II GSK 883/11

September 3rd, 2012, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 827/10“. INTER GLOBAL decided to file a cassation complaint against the judgment of the Voivodeship Administrative Court of 29 October 2010 case file VI SA/Wa 828/10 that upheld the decisions of the Polish Patent Office of 16 October 2009 case no. Sp. 449/05, in which the PPO invalidated the registration of the word-figurative trade mark TEMPO R-104245 because it was applied for in bad faith.


The Supreme Administrative Court in its judgment of 9 May 2012 case file II GSK 883/11 dismissed the appeal. The Court noted that there was some sense in INTER GLOBAL’s legal arguments that there is a need to provide legal certainty in a situation where the disloyal agent used the trade mark of a foreign entrepreneur who was conscious of this fact, even if the trade mark was applied for registration in bad faith. However, the Court held that the protection of property rights against actions taken in bad faith is so extended that it will undoubtedly take precedence over considerations on legal certainty resulting from the long-term use of the mark. This rule will not be changed by the argument that the disloyal agent promoted the foreign trade mark and incurred significant expenses. The Polish legislator adopted the ban on registration of signs that were applied in bad faith as one of the main principles of industrial property law, so there is not any possibility of legalization of any unethical actions, even qualified, because characterized by bad faith of professional entities that are involved in business activities. Because of the legal certainty of market turnover, a foreign rightful owner of a trade mark used by another entity, will not be able to demand the invalidation of or to oppose the use of a later trade mark, in a situation in which the use of the later sign has been knowingly tolerated for a limited time, at least of 5 consecutive years, unless the application for registration of the later mark was made in bad faith. At the same time it should be noted that the registration of a trade mark that belongs to foreign trade partner by his disloyal agent without the consent is not always deemed as an act of bad faith. Although the cases in which an agent acting without the authorization of the proprietor will not be acting in bad faith are veru limited, however, such situations may occur. The court also said that the acceptance of INTER GLOBAL’s argument would lead to a situation of unequal treatment of foreign entrepreneurs compared to those operating in Poland. If, as the Polish Industrial Property Law rules only apply to relationships between a Polish agent and foreign entrepreneur, it would allow for an unlimited in time option of invalidation of the registered trade mark that was applied in bad faith (that option lapse after 5 years of the use of such mark, with the knowledge of a foreign entrepreneur), in the situation of the agent and a company operating in Poland. The company operating in Poland and being in the agency relationship with another entrepreneur (agent) could, therefore request for the invalidation of the signs registered by the latter in bad faith at any time. The foreign entrepreneur represented by a Polish disloyal agent would be deprived of such a right.

Trade mark law, case VI SA/Wa 2180/10

April 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 March 2011 case file VI SA/Wa 2180/10 ruled that the word-figurative trade mark 60 R-156991 is not sufficiently distinctive in standard business transactions because it does not individualize the goods of the trade mark owner among the goods of the same type that originate from different companies.


The Polish Patent Office properly assessed the consumers of goods such as crosswords publications, and considered this groups as very diverse. Its members are people of different ages and different levels of education. There was no reason to believe that such a broadly defined consumer will identify a specific numerical designation with a given publisher, not the number of crosswords included in the publication. This judgment is not final yet.

Unfair competition, case V CSK 192/09

September 28th, 2010, Tomasz Rychlicki

AFLOFARM Fabryka Leków sp. z o.o. from Ksawerów sued two Polish companies for trade mark infringement and unfair competition delict/tort with regard to selling similar pharmaceutical products. This case went through all instances.


The Supreme Court in its judgement of 22 January 2010 case file V CSK 192/09 published in the electronic database LEX, under the no 564857, dismissed the complaint filed by Hasco Lek S.A. and Hasco Lek Dystrybucja. The Court held that the specificity of the market’s segment in which the magnesium preparations are sold, and which boils down to the fact that the same or very similar products gains the advantage of customers, through its specific name and advertising of such product and its packaging, requires greater care when introducing a new product of a very similar name and packaging, because it cannot mislead consumers, and it cannot take away consumers from another producer.

Trade mark law, case II GSK 98/07

July 6th, 2008, Tomasz Rychlicki

On 8 November 2004, the Polish Patent Office received a request from JOOP GmbH on the invalidation of the right of protection for JUUPI! R-103654 trade mark owned by “AQUAREL” Kosiorek Spółka Jawna. The applicant has based its legal interest on the fact that questioned sign is similar to JOOP! R-64463 trade mark, registered on his behalf with an earlier priority, and to international trade mark registration JOOP! IR-739262. The request was based on provisions of Article 165 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 165
1. A request for invalidation of the right of protection shall not be admissible:
(i) on the ground that it conflicts with an earlier trademark or the personal or economic rights of the requesting party have been infringed, where the requesting party has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use,
(ii) after the expiration of a period of five years from the grant of the right of protection, where the right in question was granted in breach of the provisions of Article 129, however in consequence of its use the trademark has acquired a distinctive character,
(iii) on the ground that it conflicts with a well-known trademark, where the party entitled to the well-known trademark has acquiesced, for a period of five successive years of the use of the registered trademark, in the use of the latter while being aware of such use.

2. Paragraph (1) shall not apply, where the holder of the right has acquired the right in bad faith.

The PPO dismissed the request. The Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 rejected the appeal filed by JOOP GmbH and upheld the decision of the PPO. JOOP filed a cassation complaint.

The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 held that “being aware of the use of the mark” means that the applicant, who requested for the invalidation based on provisions of article 165 of the IPL, had knowledge about the use of that trade mark by its proprietor. One cannot extend the scope of this statutory condition for “the possibility” or “the duty” to finding out or getting acquitant that such mark is being used by its proprietor. The Court ruled that it’s impossible to accept the existence of a general legal obligation that could be put on entrepreneurs to “track the competition” in order to be aware of the use of different trade marks on the market.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.

The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.

The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.